Stanfield v. Osborne Industries, Inc

52 F.3d 867 (10th Cir. 1995)

Purchase the Printed Copy at bsmsphd.com

Nature of the Case

To access this section all you need to do is click here and register.

Facts

P developed a fiberglass heating pad for newborn hogs. He presented these ideas in a letter to the president of First State Bank in Osborne, Kansas. Osborne community leaders subsequently created D to manufacture P's products. Thibault moved to Osborne to become president of D. P agreed to allow D to manufacture the products he had developed in exchange for royalties on sales. P became an employee of D. P learned of D's plan to develop a trademark, he insisted that D use the word 'Stanfield' in its mark. D agreed and they entered into a written agreement. Two trademarks were designed. One mark consisted of the word 'Stanfield'; the other mark was a circle design incorporating the word 'Stanfield.' D used both trademarks. D applied for registration of these trademarks in March 1977. They were registered on January 24, 1978. P had become ill and resigned on September 23, 1975. The Patent and Trademark Office rejected P’s application for a patent on the hog heating pad. D stopped paying royalties to P on the sale of heating pads in December 1976. P sued D claiming that D had breached the 1973 agreement by discontinuing the payment of royalties. P alleged that D's use of the word 'Stanfield' was conditioned upon the payment of royalties. The Kansas Supreme Court ultimately overturned a verdict in favor of P. D informed P that D considered the July 1975 agreement a release of plaintiff's rights in the word 'Stanfield,' and that D had registered its 'Stanfield' trademark. D used its trademarks in commerce since 1976. In 1983, D filed declarations with the Patent and Trademark Office to obtain incontestability status. In September 1991, P requested that D discontinue use of the Stanfield trademark because the 15-year license agreement had expired. D refused and P sued claiming that D fraudulently procured the registration of the trademark. D was granted summary judgment and P appealed.